The German Federal Court of Justice recently decided on the use of the sign “®” in connection with the trademark “Thermoroll” owned by a third party and on the implications this use has (file no. I ZR 219/06). The claims were ultimately only based on the Act against Unfair Competition, alleging that such use constituted misleading advertising.

The plaintiff used the mark “Thermoroll®” for advertising its products, while the mark actually owned by the plaintiff was “Termorol.” The defendant had obtained certain assets from the insolvent C.I. GmbH, including advertising material containing the mark “Thermoroll.” The actual mark “Thermoroll” was owned by a third party that was not involved in the dispute. Both parties alleged claims for injunctive relief and for information as to the use of the mark, and for damages resulting from the use of the mark.

The Court of Appeals held that advertisement with the mark “Thermoroll®” is misleading if the advertiser is neither the owner of a registered mark “Thermoroll®” nor the licensee of such mark. However, according to the Court of Appeals, in this case this deception lacked competitive relevance. Use of the mark “Thermoroll®” only misled the relevant public about the fact that the mark used in the advertisement differed from the mark actually owned by the plaintiff, which is spelled “Termorol.” The deception did not extend to misleading the relevant public about the fact that the products are branded, if only by a different mark. According to the Court of Appeals, this slight deception because of misspelling is not sufficient to fulfill the criterion of competitive relevance under the Act against Unfair Competition.

The Federal Court of Justice reversed the decision by the Court of Appeals. The court found that when the symbol “®” is added to a certain mark, the relevant public expects that a mark of the exact shape and content exists and that the user of the mark with the add-on “®” is authorized to use

this mark in the advertisement at dispute. However, this was not the case for the plaintiff during the alleged time frame. The advertising was therefore misleading.

The Federal Court of Justice took the view that this deception was indeed relevant. The parties themselves placed great importance in the use of the mark “Thermoroll®,” in particular because by means of this mark they created a link to the products of the insolvent C.I. GmbH. The allegation contained in the use of the mark “Thermoroll®” to own the respective rights to the mark or to hold a valid license played an important role in particular in this decision. The deceptive use of the mark “Thermoroll®” therefore was of competitive relevance in this situation.

The Federal Court of Justice also determined that someone who uses a certain mark in advertising without the right to do so, and thereby falsely alleges to hold rights to it, expects to gain a certain advantage from such behavior.

This decision shows that anybody intending to use the symbol “®” in connection with a mark should make sure that he/she indeed owns or holds rights to use this mark. While slight deviations in the shape of the mark may be irrelevant, this is subject to review in the individual circumstances. Changes in the phonetic appearance or the context of the mark may result in a deviation that could be considered misleading under the Act against Unfair Competition.